Today on IPcopy we are pleased to welcome  guest contributor Vaibhav Vutts from Vutts & Associates LLP, Advocates who is talking about India joining the Madrid Protocol.

The Madrid Protocol [‘Protocol]’comes into force in India from today, July 8, 2013, making India the one of the 90 countries in the Madrid System- 89 members of Madrid Protocol and the lone ranger Algeria as the only member of Madrid Agreement. Now applicants can designate India and get trade mark protection or “international registration” in India based on a ‘basic application’ or ‘basic registration’ in a Protocol member country.

The advantages of Indian accession to Protocol are obvious ones, such as:

(a) centralised trade mark application process for designated Protocol members through one basic application in one Protocol country with one set of fees;

(b) cost effective method of trade mark protection in many territories;

(c) administrative convenience of handling of renewal and subsequent ownership changes;

(d) protection extended to Protocol countries which may have been ignored or left out and addition of new countries to the international registration after these new countries join the Protocol.

The disadvantages of Indian accession to Protocol are also obvious:-

(a) the international application is dependent on the Basic application/registration, thus there shall be an automatic application of changes (including limitation and cancellations) to the international registration if there are any changes to the “basic” application or registration;

(b) cost saving may be negated if the basic application or registration is amended, refused, withdrawn or cancelled or goes through a successful “central attack”;

(c) in view of (b), the international registration shall be equally impacted and the registrations in member countries may require to be “transformed” to national applications/registration;

(d) there will be restriction in the assignment/transfer of international registration since the Assignee/transferee has to be a part of the one of the Protocol Countries either as a national, resident or have established business in Protocol territory; and

(e) the more obvious disadvantage being that the international registration can extend only to Protocol territories.

India Specific Impact

Hopefully, the Protocol and concept of international registration shall allow the Indian applicants to extend the scope of trade mark registration and result in exposure to international markets.

Considering the prevalent condition of the Indian Trade Marks Registry, it will be interesting to see how the Protocol requirements will be met by the Indian Registry. For example for various reasons including lack of human resources, there is heavy back logs (over 200,000 Indian trademarks pending in various stages) in the Indian Registry.  With the introduction of international applications with a mandatory deadline of 18 months to publish and register or notify an opposition, there will be an additional backlog with no clear road map on how the situation is being handled.

Issues such as reconciliation with Protocol of excess character fees requirement in India, reconciliation of higher payment of surcharges for renewal by Indian applicants vis-a-vis the Protocol Members and reconciliation of fees for series trade mark have not yet been addressed. Though, these are not deal breakers, it would be nice to have clarity on these.

It will be interesting to see the impact on the Indian trade mark law practices that have been built on foreign trade mark filings in India. There will be a dip in the number of trademarks filed through Indian law firms. This, however, should be a temporary dip. Hopefully, the Protocol should improve the general Indian trade mark practice requisites with Indian trade mark attorneys to addressing more substantive trade mark issues then only filings.

To conclude, Madrid Protocol provides an efficient and cost-effective way of obtaining trademark protection. However, effective utilization of this system in India will inevitably require efficacious and timely management of trademark applications owing to the stringent timelines.

The jury is still out.

Vaibhav Vutts   8 July 2013